Trials@uspto.gov
`571-272-7822
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`Paper No. 54
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` Entered: July 11, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COASTAL INDUSTRIES, INC.,
`Petitioner,
`
`v.
`
`SHOWER ENCLOSURES AMERICA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00573
`Patent 7,174,944 B1
`____________
`
`
`Before MICHAEL W. KIM, CARL M. DEFRANCO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
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`
`571-272-7822
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`
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`Paper No. 54
`
`
` Entered: July 11, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COASTAL INDUSTRIES, INC.,
`Petitioner,
`
`v.
`
`SHOWER ENCLOSURES AMERICA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00573
`Patent 7,174,944 B1
`____________
`
`
`Before MICHAEL W. KIM, CARL M. DEFRANCO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2017-00573
`Patent 7,174,944 B1
`
`
`INTRODUCTION
`I.
`Petitioner requested a conference call to seek guidance as to how
`Petitioner should proceed in view of Patent Owner’s Motion to Amend
`Claims (Paper 52) and Patent Owner’s Further Response (Paper 53, “Further
`Response”). In particular, Petitioner seeks guidance from the Board
`concerning how to respond to portions of Patent Owner’s papers Petitioner
`deems improper in view of an earlier Board Order (Paper 49, “Order”) that
`restricted the scope of Patent Owner’s supplemental briefing. Petitioner
`further requested authorization to file a motion for sanctions against Patent
`Owner in view of Patent Owner’s purportedly dilatory tactics.
`On July 9, 2018, counsel for the parties and Judges Kim, DeFranco,
`and Finamore participated in a conference call. A court reporter was also on
`the call. The Board provided guidance during the call. This Order
`summarizes that guidance, and provides further elaboration.
`
`
`ANALYSIS
`II.
`Patent Owner’s Motion to Amend Claims
`A.
`Our Order explains that “the additional briefing and evidence is
`restricted to that which the parties did not have an opportunity to respond.”
`Paper 49, 3. Patent Owner’s Motion to Amend Claims does not fall within
`the scope of that portion of the Order.
`
`
`Patent Owner’s Further Response
`B.
`Petitioner argues that certain portions of Patent Owner’s Further
`Response improperly reiterates Patent Owner’s prior arguments regarding
`Van Weelden (second full paragraph on page 6 and continuing through the
`
`
`
`2
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`IPR2017-00573
`Patent 7,174,944 B1
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`only full paragraph on page 11) and a POSITA (beginning with the heading
`“The Impact of Petitioner’s POSITA Assertions” on page 24 and continuing
`to the end of the paragraph bridging pages 29–30). Patent Owner responds
`that it repeated these arguments from the Patent Owner Response because
`those arguments are relevant to dependent claims 4, 6, 10, and 15, and the
`Board’s Rules, namely 37 C.F.R. § 42.6(a)(3), prohibit incorporation by
`reference.
`As a practical matter, the Board considers Patent Owner’s Further
`Response and Patent Owner’s Response (Paper 13) as a single document,
`and, thus, does not implicate incorporation by reference. Given that
`clarification, Patent Owner agreed to withdraw the redundant portions of the
`Further Response.
`The parties are further free to work together to determine whether any
`other portion of the Further Response is similarly repetitive, and can be
`omitted.
`
`
`Request for Sanctions
`C.
`During the call, Petitioner requested that the Board authorize a motion
`for sanctions against Patent Owner for its purported dilatory tactics, for
`example, refusing to work with Petitioner in a timely manner to resolve
`disputes such as these. Among other harms, Petitioner asserts that Patent
`Owner’s actions have effectively truncated their time period for responding
`to the Further Response, and, thus, Petitioner requests, among other
`remedies, further time to respond. We decline to do so. Only one week has
`elapsed, and the result is that Petitioner now has to only respond to a fraction
`of what Patent Owner filed previously. Furthermore, Patent Owner did not
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`3
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`IPR2017-00573
`Patent 7,174,944 B1
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`include declarations or evidence with its filings, obviating the need for filing
`evidentiary objections or depositions. Should, however, Petitioner find that,
`as they approach the next due date, they are short on time for filing
`responses, Petitioner is encouraged to work with Patent Owner to stipulate to
`later due dates or contact the Board.
`
`
`Arguments on Pages 22–23 of the Further Response
`D.
`On these pages, Petitioner identifies Patent Owner’s apparent
`disagreement with our prior determinations that “Patent Owner was
`previously on notice . . . and had an opportunity to file objections . . . prior to
`our SAS Order” (Paper 53, 22), and that the SAS Order is not a new Decision
`on Institution (id. at 23). A party is certainly free to disagree with the
`Board’s prior determinations, and memorialize such disagreement, for
`example, to preserve it for appeal. The parties are, nevertheless, bound by,
`and must follow, those determinations, unless indicated otherwise. As
`always, should any party request alterations to, or clarifications of, those
`determinations, the parties are free to contact the Board with such a request.
`And should a party provide the Board with a persuasive basis for doing so,
`such alterations and clarifications will, of course, be made.
`
`
`CONCLUSION
`III.
`The Board has provided the guidance requested by Petitioner.
`Petitioner’s request for authorization to file a motion for sanctions is denied.
`
`
`
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`4
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`IPR2017-00573
`Patent 7,174,944 B1
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`
`ORDER
`IV.
`In consideration of the foregoing, it is hereby:
`ORDERED that the transcript for the conference call shall be filed as
`an Exhibit no later than ten (10) business days from the entry date of this
`Order;
`FURTHER ORDERED that Patent Owner shall re-file its Further
`Response, omitting any portions that are redundant of its Patent Owner
`Response within five (5) business days from the entry date of this Order;
`FURTHER ORDERED that Petitioner’s request for authorization to
`file a motion for sanctions is denied; and
`FURTHER ORDERED that, should any interim issues arise, the
`parties are reminded to jointly contact the Board immediately in order to
`request a conference call.
`
`
`
`
`
`5
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`IPR2017-00573
`Patent 7,174,944 B1
`
`PETITIONER:
`Joseph Kincart
`jkincart@rtlaw.com
`
`Andres Arrubla
`aarrubla@coastalind.com
`
`
`PATENT OWNER:
`Ryan Fountain
`ryanfountain@aol.com
`
`John O’Banion
`docketing@intellectual.com
`
`
`
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`
`
`6
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`
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